Mark C. Fleming

Partner

Mark Fleming is vice-chair of WilmerHale's Appellate and Supreme Court Litigation Practice. Mr. Fleming has appeared in more than 150 appellate cases and personally presented oral argument in 36 of them, including five before the Supreme Court of the United States and 13 before the US Court of Appeals for the Federal Circuit. He has also argued before the First, Third, Eighth, Ninth, Tenth and District of Columbia Circuits and the Massachusetts Supreme Judicial Court and Appeals Court.

Mr. Fleming's prior experience includes clerkships with the Honorable David H. Souter of the Supreme Court of the United States, the Honorable Michael Boudin of the US Court of Appeals for the First Circuit, and the Honorable John C. Major of the Supreme Court of Canada. Mr. Fleming also served as an associate legal officer in the Appeals Chamber of the International Criminal Tribunal for the former Yugoslavia.

Solutions

Combining our trial and appellate strengths allows us to shape litigation strategy from the outset to maximize the likelihood of ultimate success.

Clients trust us to protect their most important intellectual property matters.

Drawing on years of experience in the public and private sectors, our lawyers handle a range of litigation involving the federal government, state and foreign governments, and complex regulatory regimes.

WilmerHale offers one of the world’s premier international arbitration and dispute resolution practices.

A global team handling highly complex and sensitive matters in all aspects of litigation.

Clients rely on our team of experienced regulatory litigators and former government officials to handle all aspects of administrative law litigation.

Advising life sciences innovators, investors and industry leaders on complex transactions, legal issues and business challenges.

Experience

Mr. Fleming argued and won a significant victory for a Fortune 500 technology company at the Federal Circuit. The appeals court held that three patent claims that we had challenged in an IPR adverse to an acoustics company were unpatentable. The patents related to speaker designs that the acoustics company accused our client of infringing.

Braintree Laboratories v. Breckenridge Pharmaceutical: Mr. Fleming argued and won a significant victory at the Federal Circuit for Braintree Laboratories, Inc. when the appeals court reversed a district court's grant of summary judgment of noninfringement for Breckenridge Pharmaceutical and remanded with instructions to enter judgment in Braintree's favor. This Hatch-Waxman matter involved a patent owned by Braintree pertaining to its product SUPREP, a highly successful product designed to cleanse the colon safely before a colonoscopy.

Mathis v. United States: Mr. Fleming argued and won a major criminal sentencing case in the Supreme Court, which also has important consequences for immigration law. He had previously argued and won the same issue in the en banc Ninth Circuit (Almanza-Arenas v. Lynch).

Reyes Mata v. Lynch: Mr. Fleming argued and won a significant Supreme Court immigration case that confirmed the right of noncitizens to seek equitable tolling of the time for moving to reopen a removal proceeding due to ineffective assistance of counsel.

Medtronic, Inc. v. Mirowski Family Ventures, LLC: Mr. Fleming was part of the team that won a significant Supreme Court case for Medtronic, in which the Supreme Court unanimously restored the burden of proof to the patent owner when a licensee sues a patent owner for a declaratory judgment of non-infringement.

Stanford University v. Roche Molecular Systems: Mr. Fleming argued and won a closely-watched Supreme Court case regarding the effect of the Bayh-Dole Act on patent assignments. In an opinion by Chief Justice Roberts, the Court ruled 7-2 in favor of our client Roche. This is the first time that the Supreme Court has affirmed the Federal Circuit's judgment in a patent case when the United States government has urged reversal. Transcript of oral argument available here.

Judulang v. Holder: Mr. Fleming argued and won a Supreme Court case challenging a policy of the Board of Immigration Appeals (BIA) denying certain lawful permanent residents the opportunity to seek relief from deportation. Although all but one federal court of appeals had upheld the BIA's policy, the Supreme Court, in a unanimous decision, described the BIA's approach as "headscratching," compared it to a "coin flip," and invalidated it as "arbitrary and capricious" - an unprecedented result in an immigration case. Transcript of oral argument available here. The American Immigration Lawyers Association awarded Mr. Fleming its 2012 Jack Wasserman Memorial Award for Excellence in Litigation in the Field of Immigration Law for his work on this matter.

01 Communique Laboratory, Inc. v. LogMeIn, Inc.: Mr. Fleming argued and won affirmance of a jury verdict of noninfringement of patent claims directed to remote access technology. The Federal Circuit's affirmance in favor of our client LogMeIn was issued six days after oral argument.

Shum v. Intel Corporation (Federal Circuit): Mr. Fleming represented Intel in an appeal involving a demand of over $400 million for breach of contract, breach of fiduciary duty, fraud, unjust enrichment, and other tort and equitable claims; he also presented oral argument in a separate appeal involving an award of court costs to Intel. The Federal Circuit affirmed judgment for Intel and denied rehearing en banc, and the Supreme Court denied certiorari.

Brown v. Medtronic, Inc. (8th Circuit): Mr. Fleming argued and won affirmance of the dismissal of a putative ERISA class action against Medtronic and a number of its senior executives. Mr. Fleming has separately represented Medtronic in several successful patent-related appeals in the Federal Circuit.

In re Plassein International (3rd Circuit): Representing the former shareholders of an acquired company, Mr. Fleming argued and won affirmance of the dismissal of a bankruptcy trustee's efforts to undo a leveraged buy-out.

Bensayah v. Obama (DC Circuit): Mr. Fleming argued and won the first-ever merits appeal of a Guantanamo prisoner in a habeas corpus case. The opinion was the first (and so far the only) time the DC Circuit has reversed a district court's denial of habeas corpus to a Guantanamo prisoner. Mr. Fleming was also part of WilmerHale's Boumediene v. Bush team, which achieved two historic victories in 2008: the Supreme Court's ruling that Guantanamo prisoners have a constitutional right to challenge their detention and the US District Court's ruling that five of WilmerHale's six clients were unlawfully detained. (submissions available at www.wilmerhale.com/boumediene)

US v. Goyal (9th Circuit): Mr. Fleming was part of the team representing former McAfee Chief Financial Officer Prabhat Goyal in his appeal from conviction on securities fraud and related charges. In a concurring opinion, Chief Judge Kozinski noted: “Mr. Goyal had the benefit of exceptionally fine advocacy on appeal, so he is spared the punishment for a crime he didn't commit. But not everyone is so lucky.”

Massachusetts v. HHS (Defense of Marriage Act) (1st Circuit): Mr. Fleming was co-counsel to the Commonwealth of Massachusetts in its challenge to the constitutionality of the federal Defense of Marriage Act (DOMA), which directed the federal government to disregard valid marriages between couples of the same sex. The US District Court for the District of Massachusetts and the First Circuit struck down DOMA as unconstitutional - decisions that were later confirmed by the Supreme Court's decision in United States v. Windsor. Separately, Mr. Fleming filed an amicus brief on behalf of former executive officials in Windsor defending the exercise of appellate jurisdiction in the case and on behalf of prominent Republican and conservative thought leaders in Hollingsworth v. Perry supporting same-sex marriage.

Mr. Fleming also argued and won an appeal by a Canadian wallpaper manufacturer from one of the largest jury verdicts in Massachusetts in 2003 (Massachusetts Appeals Court) and was part of the team that successfully defended a $1.2 million award of attorney's fees to the former general partners of a real estate partnership (Massachusetts Supreme Judicial Court).

Mr. Fleming represented the Government of Canada in several proceedings arising out of US import tariffs on Canadian softwood lumber and wheat products, including successfully defending the decision of a binational trade panel before an Extraordinary Challenge Committee under the North American Free Trade Agreement (only the third such proceeding in NAFTA's history) and defending the NAFTA dispute resolution procedure against a constitutional challenge in the DC Circuit.

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